Friday, August 31, 2007

Microsoft settles with Eolas

InformationWeek said: Microsoft has settled its eight year patent dispute with University of California technology spin-off Eolas Technologies, according to a letter to Eolas shareholders from the company's chief operating officer. "We are pleased to inform you that Eolas Technologies Inc. and Microsoft Corporation have settled all claims between them," the letter states. The letter, written by Eolas COO Mark Swords, is dated Aug. 27.

The letter says shareholders of the closely held company will receive a per-share dividend of between $60 and $72 as a result of the deal. It also notes that the terms of the settlement are confidential. "We hope that you will understand we simply cannot now or in the future provide any confidential details regarding the terms of the settlement," Swords' letter states.

Eolas first sued Microsoft in 1999 in federal court in Illinois, claiming that the software maker's methods for accessing interactive content in Web pages viewed through Internet Explorer violated Eolas patents. Eolas was awarded $520.6 million in damages in 2003. Soon afterwards, Microsoft announced architectural changes to Explorer in an effort to work around the patents.

Even in his latest comment on IPBiz, Mike at TechDirt STILL won't talk about the failure of W3C's efforts in the re-exam of the Eolas/UC patent. Gee, Mike, the train pulled out of the station.

In making the following remarks, Mike made no comment on my article on IPFrontline (cited in the IPBiz post) about the reasons WHY post-grant opposition is a bad idea:

You leave out the fact that the second window of review is only going to come up when there's a controversy over the patent -- meaning a much higher likelihood of folks being present who can present prior art or evidence of obviousness. That doesn't happen during the first round.

The reason for having that second round is simply because it later becomes clear that someone is abusing a questionable patent -- and it should be reasonable to then present evidence that the patent should never had been granted. It's unlikely that anyone will present that evidence when no one knows about the patent or how it will be used.

Of re-examinations:

[LBE said] "In fact, re-examinations are rather easy to request."

[Mike said] Nice spin, but I'm afraid you're wrong again. "Request" and actually go through are two totally different things. I didn't say that the arcane nature was in requesting, but the full process of review.

IPBiz says of Mike's silliness -->In the failed attempt on the Eolas/UC patent, W3C didn't even make a request. They got the director to order a re-exam. W3C should not even have been involved after that. But they filed a claim chart, prepared by Pennie & Edmonds, the arguments of which went no where.

In the more common form of re-exam, ex parte, the entity requesting the re-exam cites the art to the USPTO, and that's about it. The entity requesting re-exam does NOT get to argue with the USPTO about the decision by the USPTO. There's nothing arcane. There's nothing much to do at all. Either the prior art invalidates, or it doesn't.

On "incentives to approve" at the USPTO:

[LBE]--Mike's initial statement also included the urban legend: patent examiners are given incentives to approve, rather than reject.

[Mike]I'd love to see some evidence on this. Btw, I never said they were given *explicit* incentives to approve, but the implicit benefits are in approving rather than rejecting.

IPBiz to Mike--> check out the dvd from 2005, cited in the past post.

Deming was clear that when one has a problem with production, one fixes the production step. One does not add an inspection step. Mike's approach is so "UN-QUALITY" that Deming is spinning in his grave. The irony of using UNQUALITY to fix a "quality problem" is sublime.

***Naomi Grossman wrote:

Hey, want to win a lawsuit even if you lose? Or better yet, want to get a verdict against you overturned even when it isn't? Just drag the original lawsuit out, oh, say about four years and when you lose in court file an appeal and let that drag on another four years.

It worked like a charm for Microsoft.

(...)

But Ars Technica notes, "Given the way things have gone for Microsoft recently, the company probably paid out far less than the $520 million that Eolas won during the first court case in 2003, though we may never know."

Oh, and don't worry. Microsoft still believes conceptually in intellectual property. As CNet writes: "Although Microsoft has been a target in several intellectual property cases, the company affirmed its support for the concept in the computing industry."

It quotes a statement from Microsoft: "Microsoft values intellectual property and believes that the proper protection and licensing of IP enables companies and individuals to obtain a return on investment, sustain business and encourages future innovations and investment in the IT industry."

Thursday, August 30, 2007

Another chapter in the dreary "plagiarism at SIU" saga is unfolding as SIU President Glenn Poshard has been accused of plagiarizing parts of his 1984 doctoral dissertation.

An irony here is that the previous accused SIU administrator has been suspected of plagiarism in a speech given on Martin Luther King Day, with King at Boston University having been found to have plagiarized a previous thesis at BU in creating his own doctoral dissertation.

The AP story on Poshard stated:

The Daily Egyptian student newspaper analyzed Poshard's 111-page paper and reports that it found about 30 sections that weren't attributed to their original works or weren't put in quotations.

Further to the IPBiz challenge to readers, two people (Barry and Doug) correctly identified the inventor referenced by the New York Times as being Thomas Edison. Doug identified the invention as the light bulb.

Both correctly realized that IPBiz was not referring to a recent invention, and that the NYT was capable of raising issues with the work of Thomas Edison. Here's awesome praise to their insight.

From the previous post:

The New York Times reported on "the opinion of experts to the effect that the invention as described in the claim was not, in fact, anything essentially original upon which the inventor could claim a patent." There is also text "it did not rise to the dignity of an invention."

Another interesting issue is just who the experts were.

Separately, in Innovation and Its Discontents, Jaffe and Lerner refer to Edison and the light bulb in the following way: Edison was granted the basic patent on incandescent lighting in 1880. Now, surely Edison's invention was about as novel as they get. [p. 49] [See Is the Jaffe/Lerner Analysis of Patent Law Correct? ]

Jaffe and Lerner are wrong on Edison and the light bulb on so many levels it is tough to know where to begin criticism of their naive writing, that is perhaps more in line with a third grader doing a book report on a book he didn't read. Obviously, they didn't check out the New York Times.

Oh, I'm *all* for improved patent review at the first stage of the process. This bill doesn't have that in any serious way, though. Therefore, why not add that second layer. If you're going to do crap work in approving patents, then at least allow for a reasonable review system in situations when they're challenged.

IPBiz notes that the review mechanism is the same for the first and second window of post-grant review, so the only issue is "when" the review may occur. The "layer" at issue is one of timing, not of substance. As a distinct point, the House dropped the "second window" from its version of the bill, but the Senate did not.

In his initial statement, Mike at TechDirt had spoken of "the incredibly arcane rules that everyone is required to go through to contest a patent." In fact, re-examinations are rather easy to request. W3C even persuaded the USPTO director to do a director-ordered re-examination of the Eolas/Berkeley patent. Of course, it failed to change a single claim. Mike does not like to talk about that.

Mike's initial statement also included the urban legend: patent examiners are given incentives to approve, rather than reject. LBE (among many others) debunked that one back at the Stevenson, Washington meeting in April 2005. It's available on DVD.

As a separate matter, some people have been able to deal with "patent trolls" pretty directly. See for example an article in the IHT.

To return to the point I initially made on August 29, if bad examination of patent applications is the problem, the remedy is to fix the examination. Adding an inspection step (eg, post-grant opposition) is NOT a quality approach, as Deming would tell you if he were still alive.

As an additional point, bad patents don't just impact later "infringers." They can impact later patentees. Ask James Thomson and WARF about the enablement of certain patents cited against them as prior art.

An article by Brent Bowers in the IHT concerning litigation between patentee AdvanceMe and AmeriMerchant [David Goldin] includes the text:

Goldin said he found out that the only way he could win was to get AdvanceMe's patent invalidated, and to do that he had to find written evidence that its payment system had been around at least one year before the patent was filed in July 1997.

He started a blog to appeal for supporting evidence. Tim Litle, the founder of Litle & Co., a processing company, told him that the AdvanceMe patent was identical to what he did in the late 1980s and early 1990s. But how to prove it? Litle had sold the company in 1995, and all his documents went with the sale. Goldin said he hit pay dirt when Payment Tech, which had acquired Litle & Co., faxed him those 48 pages of documents dating from February 1992 to February 1994, which referred to a merchant who had paid Litle & Co. out of its credit card receipts.

This was an imaginative, low-cost, internet-based approach to ferreting out invalidating prior art.

Elsewhere in the article one does have criticism of the current efforts in patent reform:

Though [Gerry] Elman sides with Goldin in the AdvanceMe case, he believes small businesses will, in general, be the losers.

"In the past, they have relied on the patent system to become big businesses," he said. "But now, the patent system is being gutted on the strength of lobbying by the information technology industry. Big businesses will be able to copy innovation with impunity and thumb their noses at the inventions of the little guy."

The article closed with the following:

For all of Elman's fears of the threat to small business, Goldin views tighter rules for patent awards as a godsend for entrepreneurs. Today, he feels both vindicated and exhausted. For a year and a half, he said, "I had two jobs: corporate CEO and detective."

IPBiz notes that the proposed post-grant opposition mechanism is merely an over-priced procedure to wear-down smaller inventors. See Post-grant opposition: a bad idea

Wednesday, August 29, 2007

On the recent opposition by labor unions to patent reform, Mike at TechDirt writes:

The second complaint is with making it easier to contest a patent after it's been issued. This is also a no-brainer. Given how little review goes into a current patent, along with the fact that patent examiners are given incentives to approve, rather than reject -- combined with the length of time it currently takes to get a patent reviewed, the incredibly arcane rules that everyone is required to go through to contest a patent and the quick draw of some courts who refuse to wait for the patent office to review patents, it makes sense to have a better system to make sure a patent is valid. Why would anyone be opposed to improving the quality of patents... unless they hold questionable patents?

Mike is still spouting the Quillen/Webster nonsense, even after Lemley jumped ship.Sad. Post-grant opposition is not a quality proposal. If there's a problem with the examination of patent applications, fix the examination. Don't add an inspection step. Read Deming.

In a summary judgment ruling, D. Mass. said that Roche's Mircera drug, a pegylated-erythropoetin (peg-EPO) drug used to treat anemia, infringes on an Amgen patent. In a separate summary judgment, the court also ruled in Amgen's favor on certain Roche defenses against the patents-in-suit. [see Forbes]

HOWEVER, validity is yet to be determined. Roche noted: "While we disagree with the Judge on the matter of infringement, the ruling does not determine the ultimate validity of Amgen's patents."

Shelly Mar in the UNLV Rebel quotes one Andrew Schwartz of Custom-writing.org:

“What we do is ghost writing – not plagiarism,” Schwartz said. “We are paid for the writing.”

Schwartz says customers request shorter assignments, between 6 and 7 pages, more frequently than longer assignments and dissertations. Most of the students using the website are third or fourth year college students, and science majors make up approximately 50 percent of their clientele. Business majors comprise 30 percent, social sciences make up 15 percent, and only 5 percent are other majors.

Long, long ago, during the plagiarism matter involving Laurence Tribe of the Harvard Law School, someone brought up the possibility that Tribe's book had been ghost-written, which was considered a far worse problem than the specific plagiarism matter at hand. This was based in part on the rather convoluted form of Tribe's apology, which never acknowledged that Tribe plagiarized and allowed for the fact that the ghost-writer was the one who plagiarized the work of the University of Virginia professor.

To the Schwartz matter, plagiarism is utilizing the words of another without giving credit to the other person (i.e., citing them). Passing-off ghost-written work as one's own is plagiarism, plain and simple. Under the copyright doctrine of "work-for-hire", it likely would NOT be copyright infringement, but as repeatedly noted on this blog and elsewhere, plagiarism and copyright infringement are two different things.

The problem of what to do with the plagiarizing ghostwriter is not unrelated to the problem of what to do about the "student researcher" who gets the research wrong, but the professor author doesn't realize it. Does the "professor author" get to blame the student researcher? One would not think so. However, the Lemley Patenting Nanotechnology piece proclaiming Gary Boone to be the inventor of the integrated circuit [IC] might suggest otherwise.

***Further on plagiarism v. ghost writing, the Chronicle of Higher Education has text:

The most recent addition to the [plagiarism] club is the Yale law professor Ian Ayres, who has acknowledged that several passages in his 2007 book Super Crunchers contain unattributed reproductions or nearly identical paraphrases of other sources. (The Yale Daily News found nine such instances.) In a statement to the Yale Daily News, Ayres says that his citations are proper for a book intended for a popular audience but that he will make changes in future printings of the book.

What is going on here? Dorf has a theory: These are not plagiarism scandals, they are ghostwriting scandals. "For it's easier to believe that a research assistant whose own reputation is not on the line and who may not be as familiar with the norms of attribution (even if he or she should be) would ever so slightly change the prose of another author as a means of cutting corners on a project that has been delegated to him or her."

IPBiz notes that Dorf's theory was previously proposed by Dean Velvel (and others) to account for the Laurence Tribe (Harvard Law) plagiarism matter. Dorf's blog obliquely relates the issue with Tribe, but doesn't note that the other folks were far more explicit:

I raise this question painfully aware that as a co-author, former research assistant and friend of Larry Tribe, readers will infer something about his own practices from my asking it, and so I'll say that I did not ghost-write anything substantial [IPBiz: !!] for Larry's academic projects when I worked as his research assistant. My speculations about the failure to attribute in his work (which does not include anything I worked on) are just speculations, just as I'm speculating about ghostwriting in the work of Ayres and the others.

Monday, August 27, 2007

Steven Reinberg in an article titled -- Embryonic Stem Cells Repair Human Heart-- discusses the use of HUMAN embryonic stem cells to repair the heart of a RAT.

Within the text of the article:

The researchers found that the rats that didn't receive the human heart cells all developed heart failure, according to the report in the Aug. 27 online issue of Nature Biotechnology.

"In contrast, the animals that got the human heart muscle grafts implanted in them had a complete reversal of the progression of heart failure," Murry said.

The article also stated:

One expert thinks that while the results of this study are promising, there are still many problems to be overcome before stem cells can be used to treat humans after a heart attack.

"This study makes the case that you can use embryonic stem cells after a heart attack, and shows that there is an improvement in cardiac function," said Dr. Kenneth R. Chien, a member of the Harvard Stem Cell Institute.

In that case, a HUMAN was treated: The stem cells were derived from the patient who was treated, so there no immune issues due to a difference between patient and stem cell source. I believe the stem cells were injected into the heart.

Saturday, August 25, 2007

Merely fyi, note "Patents, Search of Prior Art, and Revelation of Information," by Langinier and Marcoul, on the strategic non-revelation of information by "innovators" [sic] when applying for patents.

The mark of Quillen and Webster is in the paper in the text: "it is more common to grant a patent to a bad innovation than to refuse a patent to good innovation, as a very high percentage of applications are approved."

IPBiz has noted that grant rates are NOT a proxy for the kind of job the USPTO is doing in complying with the law. The USPTO has no control over the quality of incoming applications. A grant rate of 100% might be appropriate if the applications have claims which reflect inventions which are novel and nonobvious. Separately, Langinier and Marcoul seem to be unaware of the criticism of the Quillen/Webster approach.

The Business Standard summarized thoughts of D. G. Shah : Section 3(d) forces firms to focus efforts on innovation and hardcore research instead of tinkering with known substances and included Shah's text:

Likewise, the threat of depriving Indians of new research products seems hollow. If they do not register their patents in India, the domestic industry has the proven capability to "reverse-engineer" the same and provide them at much lower prices. If they register the patent and do not work it, India's patent law has adequate mechanism to deal with such situations and ensure that the product is available to the needy.

More importantly, what is there in the new Section 3(d) that is causing heartburn? It creates a bar to differentiate discovery from invention. The patent applications that cannot cross the bar are treated as "trivial changes" not eligible for patents.

Curiously, talk about "discovery" and "invention" has appeared in the United States, once in the context of DNA sequences (DNA exists in nature, knowledge of it is simply a discovery, not an invention) and more recently in the stem cell wars.

Stemcellcommunity had text: Dr. Jeanne Loring, a stem cell researcher at the Burnham Institute for Medical Research, filed statements in support of the re-examination requests. "The real discovery of embryonic stem cells was by Martin Evans, Matt Kaufman, and Gail Martin in 1981, and none of these scientists considered patenting them," said Loring. "It is outrageous that WARF claimed credit for this landmark discovery nearly 15 years after it was made."

Also, Hugo Gernsback in January 1919 wrote:

"If you mean the man who really invented, in other words, originated and discovered--not merely improved what had already been invented by others, then without a shade of doubt, Nikola Tesla is the world's greatest inventor, not only at present but in all history .... His basic as well as revolutionary discoveries, for sheer audacity, have no equals in the annals of the intellectual world."

The alternative viewpoint on 3(d) in the Business Standard was given by Ajit Dangi:

Apart from stifling innovation, the current Indian patent law gives a wrong signal to the domestic as well as international investing community that India is not ready to assume its rightful place in the global economy. Some sections of the domestic lobby which argue against incremental innovation are surprisingly busy getting international patents for their incremental innovations. Dr Mashelkar Committee's Report gives an annexure which gives hundreds of such examples.

In conclusion, the Section 3(d) of the Indian patent law will not only act as a barrier for R&D and innovation, but it will also have a negative impact on public health and India's international image. If India has to move up from imitation to innovation, it needs to amend Section 3(d) of the Patent Act to allow patenting of incremental innovations.

Friday, August 24, 2007

A challenge to IPBiz readers

IPBiz puts out a challenge to readers. The New York Times reported on "the opinion of experts to the effect that the invention as described in the claim was not, in fact, anything essentially original upon which the inventor could claim a patent." There is also text "it did not rise to the dignity of an invention." Who was the New York Times talking about and what was the invention?

Although it is tough to determine "Democrat" and "Republican" positions on patent reform, note that labor unions are against the present reform bills:

Opponents of legislation that would overhaul the U.S. patent system have enlisted new allies who may cause majority Democrats in Congress to rethink their support of the proposals.

Since late July, three labor unions -- the AFL-CIO, the International Federation of Professional and Technical Engineers (IFPTE), and the United Steelworkers -- have sent letters to lawmakers saying they oppose two current patent reform bills. Patent reform opponents say they hope their alliance with organized labor, which has a long history of supporting Democrats, will stall the legislation.

Prof. Lemley never claimed that Gary Boone invented the integrated circuit. Rather Lemley claimed that the technology that in Boone's patent, titled "Single Chip Integrated Circuit Computer Architecture" was not caught up in a patent thicket in part because the Hyatt v. Boone interference proceeding went on for so long.

I'm sure it would have been more precise to call what Boone and Hyatt were fighting over something else, but it was really a research assistant's mistake rather than a substantive error by Lemley.

#4. On August 24 at 6:49am, about 7 hours after the Martin post, LBE said:

Michael Martin states that Prof. Lemley never claimed that Gary Boone invented the integrated circuit. For reference:

The integrated circuit was itself an improvement in the field of computing, a way of building transistors (an invention discussed above) [p. 612] directly into a computer chip by using charged silicon, a semiconductor. The invention opened up not just computing but also calculators, cell phones, and a host of other portable electronic devices. But because two different inventors working independently developed the integrated circuit at about the same time (1971), the patents were put into interference. Gary Boone was ultimately declared the winner, but not until 1999, twenty-eight years after the first patent application was filed.

#5. LBE also said at August 24 at 7:02am:

As one further remark about Michael Martin's (incorrect) assertion about the "Gary Boone" matter, note the following:

Thanks to John Allison, Chris Cotropia, Rochelle Dreyfuss, Nathan Durrance, Hank Greely, Rose Hagan, David Jaffer, Joseph Mallen, Greg Mandel, Michael Martin, Judge Margaret McKeown, John Miller, Craig Nard, Matt Powers, Bhaven Sampat, Madhavi Sunder, Hal Wegner, and participants at programs at Stanford Law School, the University of San Diego School of Law, the U.C. Davis School of Law, and the Foresight Nanotech Institute conference for their helpful comments, and to Michael Martin for research assistance.

Footnote 15: He does include "nanometer," which covers both clear nanotechnology inventions involving nanoscale gate size and nanofiltration and unrelated inventions dealing with optics (because the wavelength of visible light is measured in nanometers, regardless of the scale of the application). Altering Sampat's search to exclude "nanometer" reduces the number of patents substantially: only 56% of Sampat's issued patents, and 67% of the published applications, do not include any reference to "nanometer" in the claims. Communication from Michael F. Martin to Mark A. Lemley (Feb. 4, 2005) (on file with author). But while some of those patents are likely to be unrelated to nanotechnology as I have defined it, many will be true nanotech patents, especially in the semiconductor field.

LBE said later (7:22am)--> Separate from the lack of knowledge of patent law manifested by many of the intellectual property academics, there is an odd daisy-chaining behavior in many of the publications.

For example, Lemley in his rational ignorance paper (95 Nw. U.L. Rev. 1495), cites to the (then) unpublished work of Quillen and Webster:

The Quillen-Webster study suggests, moreover, that they ultimately issue an astonishing ninety-seven percent of the unique applications filed. n126

Turning full circle, in his July 2007 paper on SSRN, Lemley effectively says (of the 97% business): just kidding guys; the number isn’t so high after all.

LBE notes in the real world of the integrated circuit of Noyce and Kilby, the two companies cut a deal AND IC users had to pay royalties to BOTH companies, quite a different story from the world of Hyatt and Boone and not the one discussed in Lemley's "Patenting Nanotechnolgy." Thus, we have a substantive error by Lemley.

IPBiz notes that the post of Michael F. Martin raises a whole different issue, in the realm of author responsibility. The text "really a research assistant's mistake rather than a substantive error by Lemley," wherein Lemley was clearly talking about the big invention of the integrated circuit when he wrote: The invention opened up not just computing but also calculators, cell phones, and a host of other portable electronic devices is both troubling and hard-to-believe.

***Of the daisy-chaining issue, Patrick Doody had written: "The [patent system] critics consist of a tightly knit group of university professors and non-patent attorneys who are critical of the patent system and who favor weakening patent rights. The critics publish countless articles every year and repeatedly cite to one another's work, if not simply to repeat it or provide a synopsis thereof in a different venue, which gives the impression that there are numerous opinions consistently critical of the patent system. This coterie of most frequently published patent critics is so insular and close-knit that no effective independent review of their work is likely."

***This sub-thread has been posted on IPBiz in recognition of the Sikahema Effect.Vai Sikahema had an op-ed in August 2006 on "Rutgers is Wrong," but one can't find the op-ed, or Rutgers football tickets, in August 2007. Hasta la vista, baby! Things that might construed to be incorrect, or simply stupid, don't necessarily have a long half-life on the internet.

http://ipbiz.blogspot.com/2006/11/more-bad-indexing-by-google.html

***An IPBiz reader wrote: Are you surprised Martin spoke up, defending Lemley? IPBiz is not surprised, given Martin's involvement in researching/(writing?) "Patenting Nanotechnology." Note that on the thread in PatentHawk Martin did not disclose his involvement with "Patenting Nanotechnology" or with Lemley.

***To alleviate any confusion caused by Lemley's statement in Patenting Nanotechnology, Gary Boone had NOTHING TO DO WITH THE PATENTS ON THE INTEGRATED CIRCUIT. Noyce and Kilby filed applications with claims pertaining to the integrated circuit, and there was indeed an interference between Noyce and Kilby, which went to the CCPA years and years before the Hyatt/Boone case discussed by Lemley. The outcome of the Noyce/Kilby matter is completely different from that reported by Lemley in his "alternative history" version of the integrated circuit.

Besides co-founding Intel, Noyce, who died in 1990, is credited with inventing the integrated circuit while at Fairchild. (Jack Kilby of Texas Instruments is also credited.)

Separately, the first customer for Fairchild's transistors was IBM: He [Jay Last] went to a store in August 1958 to get something [Brillo box] the company could use to mail its first transistors, to customer IBM.

How badly Jaffe and Lerner misunderstood the light bulb story

Even when some history is presented, the discussion is flawed. Jaffe and Lerner refer to Edison and the light bulb in the following way: Edison was granted the basic patent on incandescent lighting in 1880. Now, surely Edison's invention was about as novel as they get. [p. 49] The actual story of Edison and the light bulb shows that the invention was NOT as novel as they get, with an interference lost by Edison, deliberation at the Supreme Court (unmentioned by Jaffe and Lerner) and rights to earlier patents on light bulbs later bought by Edison.

Much of what Jaffe and Lerner wrote about Edison, and about the Wright Brothers, derives from a paper written by Merges and Nelson [MN], which paper suggested that certain patents might block innovation. Within the MN paper, one can find the text:

No single patent better illustrates this than Edison's U.S. Patent 223,898, issued in 1880. This was "the basic patent in the early American incandescent-lamp industry," covering the use of a carbon filament as the source of light; n191 it proved to have a profound effect on the industry until it expired.

Although the Edison General Electric Company had some difficulty establishing the validity of its basic patent, once it did the industry changed drastically. In 1891, U.S. Patent No. 223,898 was held valid and infringed by a competing design. n192 General Electric officials then quickly obtained a series of injunctions that shut down a number of competitors. n193 [IPBiz notes this is the 11th year of what would be a 14 year patent.] As the aptly-named industry historian Arthur Bright stated, "For twelve years [after the issuance of the 223,898 patent] competition had been possible; it suddenly became impossible." n194 The company's market share grew from 40 to 75 percent; entry into the industry slowed from 26 new firms in 1892 to 8 in 1894, the last year of [*886] the patent's life; n195 and the steady downward trend of lamp prices slowed until the patent expired. n196

Reading this passage, one might get the impression that General Electric controlled the industry by 1891, and that by 1892 (twelve years after the '898 patent issued in 1880), General Electric's competitors were dead.

If you inferred that from the Merges/Nelson paper, you would be dead wrong.

Contemplate the Columbian Exposition which opened in Chicago in May 1893, as discussed in text from verlang.com:

The Electricity Pavilion, adorned with a dozen elegant minarets, four of which rose 169 feet above the hall, was over two football fields in length and nearly half that measure in width. Covering three and one-half acres, this "spacious and stately" structure "befit[ted] the seat of the most novel and brilliant exhibit of the Columbian Exposition."

Foremost among the exhibitors were the megalithic corporations, such as Westinghouse and GE, from America, and the more modest sized AEG, from Germany. Whereas AEG reproduced some of the AC equipment Brown and Dobrowolsky used in their "epoch-making" 108-mile Lauffen-to-Frankfurt transmission, GE presented its own AC system. Westinghouse, having won the bid to light the fair with the only bona fide patents, was in an odd situation. Legally, it should have been able to block the competitors from advertising pirated apparatus, but pragmatically, considering time limitations and other factors, such a tactical action was out of the question. In fact, in some ways, they owed AEG gratitude for pointing the way. Their course was to make it clear that there was only one inventor. And so they erected a forty-five-foot high monument in the center aisle of Electricity Hall which proclaimed the truth to the world. The testimonial read in big bold letters: Westinghouse Electric and Manufacturing Co. Tesla Polyphase System. And with this method, from an annex of Macinery Hall, Westinghouse illuminated the entire World's Fair. Having manufactured a quarter of a million Sawyer-Mann stopper lamps for the occasion, Westinghouse generated three times more electrical energy than was then being utilized in the entire city of Chicago.

Edison was at the Columbian Exposition, even though his light bulbs were not there. Verlang notes: Tom Edison presented ... the multiplex telegraph, the fantastic talking machine known as the phonograph, and his kinetescope, which for the first time in a public forum displayed "the varying labile movements" of a human being in motion.

Looking at Edison's light bulb without looking at prior work in light bulbs and without looking at the "AC vs. DC debate" has produced a very misleading picture of the supposed role of patents in blocking innovation. Jaffe and Lerner got the story wrong, seriously wrong.

Wednesday, August 22, 2007

Simpson: [The Bayh-Dole Act] has given ownership of any discovery to the research institution where it is made, even though taxpayers paid for the research. The institution - usually a university - patents the discovery and then licenses it to a private company and receives royalties.

LBE: Simpson's discussion of how the Bayh-Dole Act works is not entirely accurate. One can review 35 USC section 200 ff and see also

Simpson: First, when a discovery has been funded by the public, it's only fair that the public share in any profits. As an example, the recently enacted IP rules in California's landmark $6 billion stem cell research initiative provide that if there is revenue to a research institution as the result of publicly funded research, 25 percent goes back to the state.

LBE: Simpson's number of $6 billion assumes tax-exempt bonds can be issued, a reality that is far from clear. See

Still: Not only does Simpson think the historic Bayh-Dole Act has been a colossal waste of time and money, even though many experts believe it unchained the innovative potential of the nation's research universities, but he doesn't understand the basics about “technology transfer” on those same campuses.

LBE: The Bayh-Dole Act has been criticized, for example, within the magazine Fortune. There have been some issues with potential misuse of university patents, such as the infringement suit brought by the University of Rochester over COX-2 inhibitors, which suit terminated at the summary judgment stage. See also

Still: Fact: With stem-cell licenses as well as all WARF licenses, non-profit researchers are provided a safe harbor to use any WARF-owned technology for academic research not only in Wisconsin but all over the world. The only thing WARF declines to do is to donate its stem cells to for-profit companies or private labs.

LBE: Neither Simpson nor Still talk about the impact of the research exemption of the Hatch-Waxman Act codified at 35 USC 271(e)(1), the relevance of which to stem cell research was discussed in 88 JPTOS 239 (2006).

Simpson rebuttal: And while many support it, many are critical. Read Jennifer Washburn's excellent book, "University, Inc. the Corporate Corruption of Higher Education" for that view. The suggestion is that the Bayh-Dole Act has led to too many patents, too far "upstream" and an over commercializing of traditional basic academic research.

LBE: On Jennifer Washburn, see Los Angeles Times Article Way Off Base on Stem Cell Issues at http://ezinearticles.com/?id=178050

Simpson rebuttal: 1. If there is an invention that results in a revenue stream, the funder - in this case, the state - should get a share as a direct payback. The exact amount is open to discussion, but needs to be known up front. Arguably, it also should be a function of the amount of public investment in the project.

LBE: One should realize that this is a sort of "deck chairs on the Titanic" concern. For example, with embryonic stem cells, the likelihood of research in the first ten years leading to a significant revenue stream is small. The more likely near-term payback is in state employment, and as to the science of stem cells, in genetic screening. See

Lawrence B. Ebert is a registered patent attorney located in central New Jersey. He holds a Ph.D. from Stanford, a J.D. from the University of Chicago, maintains a blog at IPBiz.blogspot.com, and is the author of LESSONS TO BE LEARNED FROM THE HWANG MATTER: ANALYZING INNOVATION THE RIGHT WAY, published in the Journal of the Patent & Trademark Office Society [88 JPTOS 239 (March 2006)] and PATENT QUALITY AND PATENT REFORM, 88 JPTOS 1068 (December 2006),

But, what if 21st century Wright Brothers equivalents stole the show and Steinbrenner didn't win the World Series? Or, what if all these diverse patent holders don't play nice in the Proposition 71 sandbox?

A number of blogs (e.g., PatentHawk) are talking about the new rules on continuing applications, to be available on the internet tomorrow. Consistent with earlier rumors, it appears there will be a (2+1) limit (ie, 2 cons and 1 RCE as of right), more liberal than the initial proposal, but still not obviously consistent with the words of the statute.

Will the limit hold up in court? The rules got through OMB, making this look somewhat like a done deal. One law review note concluded: The Note concluded that, if the rule is promulgated and if its validity is challenged, the CAFC should invalidate the rule under the "hard look" standard of review. Within the Note, one has: Under the "hard look" standard, a court sets aside an agency action if it determines that the agency failed to take a "hard look" at the significant considerations contrary to its position. n46 In fact, of the three review standards, the "hard look" standard is the least deferential to the agency. n47 The case in question is Motor Vehicle Mfrs. Ass'n v. State Farm Mut. Ins. Co., 463 U.S. 29, 43 (1983). [22 Berkeley Tech. L.J. 193 (2007)]

****The following comment was submitted to The Scientist on 23 August:

The comment of Carl E. Gulbrandsen may correctly identify the prime motivation for the rules change (reduce backlog) but may be overly optimistic in the belief that backlog will be significantly improved because of the rules change.

Data of the USPTO for FY 2005 showed that there were 63,000 continuing applications, which included 44,500 cons/cips and 18,500 divisionals. Of these, 11,800 were second, or subsequent, applications. Separately, there were 52,000 RCEs, of which 10,000 were second, or subsequent. Thus, 21,800 applications of 384,228, were second or subsequent, which is 5.7%. As for FY2004, RCEs were the single most abundant “continuing” form, 52,000 of 384,228 [13.5%]. All “continuing” forms combined constituted 115,000 of 384,228 [30%].

One notes that the "target" of the initial rules change (second or more filings of continuing applications) comprised only 5.7% of all filings. The modified rules will impact still fewer filings. Separately, the major continuing application form is the RCE. RCE's are filed when the examiner and applicant can't reach agreement over the claims as presented. That is where the major problem is.

There has been a lot of misinformation about the underlying reasons for the rule changes (see 88 JPTOS 743 for discussion of faulty reporting by Science). Separately, it is quite possible that there will be a legal challenge to the new rules.(for example, http://ipbiz.blogspot.com/2007/08/new-rules-on-continuing-patent.html)

Even Lemley and Moore had given up on the first Quillen/Webster paper in 2004 when they published "Ending Abuse..." Now Lemley (and Sampat) are pretty much on line with the numbers Robert Clarke presented in 2003.

One wonders where Aharonian is on this? Aharonian made a big deal of the USPTO (allegedly) missing prior art on US 6,049,811 in the form of a paper in JPTOS, but it sure does not look like Aharonian has been reading JPTOS in the last few years.

***

The site insearchofabrilliantwhitecloud has some discussion of Aharonian. HOWEVER, note that Aharonian, as of 23 Sept 07, still has nothing to say about his missed prior art on patenting movie scripts AND nothing to say about the goofy "prior art" on page 144 of Jaffe and Lerner's Innovation and Its Discontents. Silence is NOT always golden.

An IPBiz reader sent in a link, which included the following text related to the military's discovery of the effectiveness of drones:

“You can’t bring the soldier back to the farm once he has seen Paris,” says Colonel John Burke, the army’s former director of unmanned systems integration, to underscore the growing attractiveness of drones.

Were it possible, IPBiz would wish that the 212 members of Custer's battalion at Little Big Horn, who were armed with single-shot rifles thirteen (13) years AFTER the Army had seen the "Paris" of the Spencer repeater, to make comments to Colonel Burke. And yes the Indians at Little Big Horn did have repeating rifles, including Winchesters.

The article even mentioned the Wright Brothers:

But some experts, including Pierre Chao at the Center for Strategic and International Studies, argue that it would be a “strategic mistake” to narrow competition for UAVs.

“If you think it is a young technology, that the Orville and Wilbur Wrights of the 21st century are running around in the UAV marketplace, then as messy as it makes the environment, is it far more strategically important to have lots of players, different patrons behind those players, and to keep stimulating the useful competition of ideas that a useful inter-service rivalry brings.”

To recall history, Orville and Wilbur Wright were banging the door down telling the US Army of the military value of their Flyer, and were largely ignored. The Wrights got more respect in France, and Glenn Curtiss got the attention of the US Navy. If the Orville and Wilbur Wrights of the 21st century got the treatment actually given to Orville and Wilbur Wright in the early 20th century, they would be getting royally screwed.

The military missed "Paris" a few years before the Wrights. James P. Rybak wrote in Popular Electronics, November 1999:

[I]n September of 1898, Tesla startled visitors to the Electrical Exhibition at New York's Madison Square Garden by demonstrating the world's first radio-controlled boat using what he called his "mind-powered" or "Teleautomatic" system. Tesla remotely controlled a 3-foot long iron-clad boat through a variety of maneuvers in front of large audiences every night for a week. To demonstrate its simplicity of operation, Tesla permitted volunteers from the audience to operate the controls. Patent number 613,809 was awarded to Tesla for this invention. His goal was to sell a similar remotely operated submarine to the U.S. Navy for use in the Spanish-American War. Tesla hated war and felt his invention could save lives. The Navy was not interested.

[The original, history-defying, article in FT was by Demetri Sevastopulo.]

In passing, Gatling, Tesla, and the Wrights all thought their inventions could save lives.

Sunday, August 19, 2007

American Thinker gives 21 examples of false reporting/plagiarism, which range through the television media (ABC, CBS) through major print media (Newsweek, New York Times) reaching even the Sacramento Bee and my beloved Orlando Sentinel.

Most of my favorites weren't covered. For pure dull-witted stupidity, the Boston Globe describing plagiarist/copyist Joyce Hatto as "the greatest living pianist that almost no one has heard of" has to be right up there. Of course, the New York Times once reported the results of a panel on DNA profiling/fingerprinting exactly the OPPOSITE to what the results were. Recall, in the old days, the New York Times defended its building with Gatling guns, but now many readers simply believe what's in the Times, including the gobbleygook about patent reform.

One hundred years ago, Wilbur Wright was talking to Octave Chanute about newspaper talk. Nothing has changed.

BNN immediately investigated the claim, and discovered that the BNN writer in question, Shantanu Dutta, had indeed presented the complainant’s material as though it were his own. Mr. Dutta’s account was suspended pending further investigation. A quick review, followed by a more comprehensive check of numerous stories, found numerous instances of plagiarism in Mr. Dutta’s work. The offenses were so numerous and so widespread that it was often more difficult to find original, unplagiarised material in his postings than to find plagiarized material. The most common offense found is the simple cutting and pasting of large blocks of text from published news articles into Mr. Dutta’s postings.

Sort of reminds one of patent law professors writing on patent reform. Patrick Doody in The Patent System is Not Broken, 18 Intellectual Property & Technology Law Journal 10 (December 2006) suggested that various legal academics were recycling ideas from Jaffe and Lerner's Innovation and Its Discontents.

An op-ed by Sidney Taurel in the Indianapolis Star arguing against "patent reform 2007" includes the following:

Hundreds of other innovation-based businesses, along with individual inventors and entrepreneurs, universities and labor groups share Lilly's opposition to the bill. But the most powerful evidence against the proposed changes comes from those who hope the bill will become law.

The Economic Times of India excitedly reported last month that "a crucial bill making its way through the U.S. Congress is set to give a new inexpensive option for Indian drug makers to attack the patents that give monopoly rights to top-selling brands in the largest pharmaceutical markets. . . . It allows one to challenge a patent anytime during its life at a fraction of the cost of litigation."

Translation: Some foreign interests see this bill as Americans about to give away the store.

U.S. companies that support the bill -- including Dell, Microsoft, Palm and other information technology businesses -- have a different perspective as aggregators and assemblers of innovation. They typically do not rise or fall on individual discoveries and are angered that courts have on a few occasions forced them to pay hefty penalties for infringing patents on components of the much more complex products they sell.

IPBiz notes that the proposed opposition/cancellation proceeding is wrong not simply because some pharma interests in India may like it. The "opposition proceeding" is wrong because, if patent examination is not being done right, the proper remedy is to fix the patent examination process, not to add a burdensome inspection step called patent opposition. We already have one process called re-examination which allows prior art which may have been missed to be brought to the attention of the USPTO.

Buried in the back issues of The Patent Lawyer (Robert J. Ambrogi, Editor-in-Chief) is an article on re-examination by Daniel W. McDonald containing a comment about the re-examination of the Berkeley/Eolas patent:

For example, the $521 million jury verdict in the Eolas Technologies v. Microsoft case is at risk, due to the PTO's decision to grant reexamination of that patent. Reexamination is a potent but underused weapon....

The re-exam in the Eolas matter was ordered by the USPTO director, with input from W3C and a claim chart by Pennie & Edmonds. The arguments in that claim chart were rejected in the re-examination, and Eolas ultimately prevailed without amending its claims.See for example the 2005 IPBiz post Does the Eolas re-exam result make it harder for Microsoft in court?

The article did discuss the cost advantages of re-examination, noting that an ex partes re-exam can be filed for tens of thousands of dollars. IPBiz notes that it is also less expensive for a patentee to respond to an ex partes re-exam than to a litigation or to the proposed opposition (cancellation) proceeding. It is more or less like responding to an Office Action in normal prosecution, and the arguments are done on the papers (no depositions).

But that was then, and this is now. In "Open Access to Infinite Content," (10 Lewis & Clark L. Rev. 761), Dan Hunter presents an absolutely moronic vision of the future, moronic as to his own analysis and moronic as to what Hunter's publication approach will lead to.

Of student-run journals, if one thinks that having the Stanford Law Review declare that Gary Boone invented the integrated circuit is a good idea, then one will like Hunter's vision of infinite content, which is "infinite" access to unrefined stupidity.

Of Google's conception of ranking, which is a perversion of Garfield's science citation analysis, check out the content of the article How Does Solar Power Work?, which has been viewed 32,171 times in less than two years, even though the article mentions "the protons of the sunlight beat down onto the PV [photovoltaic] cell they knock the neutrons off the silicon." Recall Gresham's law, commonly stated as: "When there is a legal tender currency, bad money drives good money out of circulation."

Further, in a system in which everyone is concerned about getting hits, one will have mutual back-scratching societies to beat anything ever seen in the science literature. As Doody has pointed out in the context of intellectual property academics, the net result is everyone publishing different versions of the same thing (Doody's point being the repeated copying by many of themes in Jaffe and Lerner's Innovation and Its Discontents.) What has happened in intellectual property academic publishing establishes a variant of Gresham's Law in "open access to infinite content."

Just to be clear, it was Aharonian suggesting that a movie script may be patentable. My blog entry had two parts-- reporting Aharonian's position as fairly as I could, and then poking a few holes in it.

Since my CNET blog is just getting started, I'd appreciate it if you'd do something for me. The link you used goes to a syndicated version of the piece. The original blog entry-- which is longer, and not so badly edited by some unknown person in Australia-- is here:

http://blogs.cnet.com/8301-13512_1-9744783-23.html

Concerning the CNET post, IPBiz had pointed out that Andrew Knight had already submitted a patent application on a storyline ("The Zombie Stare") AND he had even published an article in JPTOS on what he was doing, all of which had been ignored by the CNET poster. The poster's response was interesting:

1. It was Aharonian's idea.2. I was poking holes in Aharonian's idea.3. Please furnish the right link so I get hits.

IPBiz notes that Andrew Knight had "reduced Aharonian's idea to practice" before the commentary of Aharonian reported by the CNET poster, the CNET poster did not contemplate the arguments published by Knight in JPTOS (or in the published patent application or prosecution thereof), but the CNET poster was worried about hits to his own link. That's the nightmare world that Dan Hunter did not talk about in Open Access to Infinite Content.

As a small footnote, as of August 19, 2007, the link at http://blogs.cnet.com/8301-13512_1-9744783-23.htmlhas NOT been updated to include any discussion about Andrew Knight. The reader of that site would not learn that what was hypothetically being discussed on that site had already been attempted at the USPTO and written about in JPTOS.

Law review article criticizes FTCR and PubPat on stem cells

The United States Patent and Trademark Office ("PTO") issued United States Patent Nos. 5,843,780 ("the '708 patent"); 6,200,806 ("the '806 patent"); and 7,029,913 ("the '913 patent") -- all relating to embryonic stem ("ES") cells -- to researcher Dr. James A. Thomson who in turn assigned the patents to the Wisconsin Alumni Research Foundation ("WARF").

(...)

When compared, the WARF patents do not describe inventions obvious or anticipated in light of the prior art submitted by FTCR and PUBPAT. The prior art lacks any teaching for the creation HESCs; only teaches isolation of mouse or pig ES cells; and with a few keystrokes, suggests application of this groundbreaking, complex methodology in humans.

(...)

In the end, the innovation behind the WARF stem cell patents must be [p. 524] recognized, as it was at the time of discovery.

IPBiz notes that the law review article did NOT cite to previous discussion published on IPBiz. The last visits of Beardsley to the internet seem to have been on April 19, 2007 (e.g., footnote 40). By this time, IPBiz had posted much commentary on the re-exam, including

In the area of stem cells, Smith and Mountford obtained US 7,256,041 on 14 Aug. 2007, with first claim

A method of isolating mammalian stem cells from a population of mammalian cells, comprising: (a) culturing mammalian cells containing a nucleic acid construct including a selectable marker operably linked to a promoter that preferentially expresses the selectable marker in mammalian stem cells; and (b) isolating mammalian stem cells expressing the selectable marker.

In terms of the USPTO's proposed new rules on continuing applications (which originated because of perceived abuses of continuing applications), note the following history of the '041 patent:

This is a Continuation of application Ser. No. 09/537,562, filed Mar. 30, 2000, now Pat. No. 6,878,542, which is a continuation of application Ser. No. 08/535,141, filed Dec. 29, 1995, now Pat. No. 6,146,888, both of which are incorporated herein by reference.

Thus, the claims in the '041 patent claim priority to December 29, 1995, nearly 12 years before the issue of the '041 patent. The non-patent references within the '041 patent comprise nothing published AFTER 1995. The '041 patent does reference the '888 patent (to which it claims priority and which issued on November 14, 2000). The '888 patent states that it is a 371 of PCT/GB94/00848 filed Apr. 21, 1994 (the US application for this by-pass route continuation is 08/535,141. IPBiz notes in passing that utilization of the Quillen/Webster "patent grant rate math" to this family would yield an infinite grant rate, just one more reason why the Quillen and Webster approach should be categorically rejected.)

The first claim of the '888 patent states:

A method of enriching a population of mammalian cells for stem cells comprising:

a) providing in vitro a mixed population of mammalian cells whose genome comprises at least one nucleic acid construct encoding an antibiotic resistance gene operatively linked to a promoter which preferentially expresses said antibiotic gene in mammalian stem cells,

b) culturing said mixed population of mammalian cells in vitro under conditions conducive to cell survival wherein the preferential expression of said antibiotic resistance gene results in the preferential survival of mammalian stem cells in the presence of antibiotic.

The list of non-patent references within the '888 patent is much shorter than in the '041 patent.

The '041 patent contains no "summary of invention," although it does have a "summary" for certain examples. The earlier '888 patent does contain something called a "summary of invention," although it is not a "summary of invention" as would be understood by an average US patent attorney.

US 7,256,041, issued on August 14, 2007 but claiming priority at least to Dec. 29, 1995, offers a far more interesting set of circumstances than do the Thomson / WARF stem cell patents, which claim a later priority date and issued earlier.

Dr Peter Mountford, SCS's chief executive, said that stem cell purification was an essential step in preparing stem cells for use in almost all drug discovery and cell therapy applications, otherwise there was the risk of contamination of the non-stem cells in any sample, which could render the sample unusable.

He said: "With the ever increasing importance of stem cells in the US biopharmaceutical industry, the extension of SCS's patent position reinforces a key income stream and productivity advantage held by the company."

He said the patent enabled SCS to secure broad claims to what was a "fundamental and important technology".

[IPBiz notes that californiastemcellreport did not cover the '041 patent of SCS.]

***

With U.S. patents, everything is written down, and one can objectively analyze what was, and was not, included in an earlier priority document. In contrast, as noted before on IPBiz, what was written down about the Jan Hendrik Schon fraud has been vanishing.

At the moment the links on the Internet Wayback Machine still work, but there is no guarantee that these will last forever. I know that old links to, e.g., previous years' problem sets from my courses go away after some time.

The point about the disappearing Schon saga is sort of like what IPBiz discussed of the disappearing "Rutgers is Wrong" piece presented by Vai Sikahema in August 2006. Rutgers had a good season (one can't buy tickets for 2007 Rutgers football games) and one can't find "Rutgers is Wrong" anymore. The scary scenario of 1984 is here.

Nanoscale had some comments about how to be a science blogger:

Write an email to Peter Woit. If he gives your blog a link in his blog, you will start receiving lots of hits without any doubt. His blog is the most famous and most visited one in science for sure. Also, please use your real name in your blog. Bullshit like "female science professor" does not give much credibility so it will reduce your audience.. People want to know who the author is..

Friday, August 17, 2007

Now, let's turn to the venture community. Angel investors and venture funds are unapologetic in their quest to back entrepreneurs who have a "sustainable and unfair advantage" in the marketplace. If you think of entrepreneurs as elite runners at a starting line, venture investors want to bet on the runner who is already on the second lap. Even better, they want to back the entrepreneur who opportunistically puts up lawful hurdles and other obstacles to trip up the competition whenever possible.

Why is there such emphasis in the venture community on the head start? It's sad but true -- experienced investors and battle-scarred entrepreneurs know that the very best business ideas are soon copied by better financed, bigger companies. In a way, you can call this the unfair reality of capitalism.

One recalls earlier posts on IPBiz suggesting that VCs do NOT consider "the presence of patents" to be the most important factor in making an investment decision:

A key historical point along this line is that Thomas Edison had his financial backing for electricity/electric light bulb in place BEFORE he had even filed for what became his key patent (which in any event did not even mention filaments made from carbonized bamboo, the key technical breakthrough).

Note that the SCHRETER article does mention other aspects:

Still, while patents are certainly good to have, they are not the only measure of venture viability. Investors will give you equal opportunity to convince them that you have integrated several "barriers to entry" or "tactical advantages" into your business plan. Here are some ideas for your work-around plan.

# Long-term, exclusive contracts or preferential contracts with large customers.

# Multiyear partnerships, co-branding agreements or alliances with more established companies or product distributors. As a notable example, years ago Microsoft partnered with IBM establishing DOS as the dominant desktop operating system just as computers were entering homes and offices worldwide.

# Evidence of a truly distinctive service that is unmatched in the market and highly valued by customers.

IPBiz notes that, in the end, it's about people. The VCs have to believe in the man and the plan, including the management team. They are more comfortable with people they know. Historically, Edison, with the phonograph already under his belt, could convince more people than the Wright Brothers, two bicycle mechanics from Dayton. Further, recall that both Edison's "light bulb patent" and the Wrights' patent were strongly challenged. By the time the patents were vindicated, one had a different team than when the patents were filed. Wilbur Wright literally died in the patent wars.

Thursday, August 16, 2007

Note that a July 2005 article by Gail Dutton is remarkable for accurately forecasting the state of stem cell work in 2007. The article is remarkable also because it does NOT mention Hwang, EVEN THOUGH in July 2005 the second paper by Hwang Woo Suk in Science had been published and NOT YET exposed as fraudulent. Dutton did not mention explicitly therapeutic SCNT, but emphasized the "genetic screening" aspect of stem cell work over the therapeutic aspect.

Dutton also mentioned that stem cell research is more about "educating researchers" than about "practical therapies," a reality that the Proposition 71 folks in California are just coming to grips with in 2007.

Dutton wrote:

The promise of stem cell research, in many ways, is less about practical therapies and more about sparking the imagination of a generation of biologists. Careers are changing, as researchers' begin to focus more on cell signaling rather than on molecular biology.

The first commercialized usage of stem cells is likely to be in drug screening. "We believe it is important to use cells from cloned human embryos for research because of concerns that the present cloning procedures may introduce epigenetic abnormalities into the cells," Dr. Wilmut explains. The research using these cells will itself be useful.

IPBiz notes that the internet version of Dutton's article does not capture the experience of the paper version, wherein this text appears after four page shifts, way in the back of the magazine. Probably not many "paper people" reached this text.

Dutton quoted Wilmut: "At present," Dr. Wilmut says, "a small number of drugs can be tested in animal models. A high throughput laboratory test would be able to screen hundreds of drugs in the same time and for less cost. The aim is to identify drugs that are able to stabilize the patient so further degeneration does not occur."

The title of Dutton's 2005 article: Navigating Stem Cell Fact and Fiction, which is an appropriate warning for those reading some California newspapers.

Patents, Draft Riots, and Little Big Horn

The blog civilwarcavalry has a post connecting the New York City draft riots of July 1863 with Meade's failure to advance on Lee after Gettysburg.

One notes that the implementation of a US patent, to a North Carolina inventor named Gatling, also had an interesting role in the July 1863 riots, in saving the building of the New York Times from the rioters. John and Christopher Meyers briefly tell the story in a sign they exhibit with their Gatling gun replica:

As noted in 88 JPTOS 1068 (2006), Custer, in June 1876, had access to three Gatling guns, but decided not to take them to Little Big Horn. It's not clear if the guns would have had the same in terrorem effect on Sitting Bull, Crazy Horse, et al. as the guns apparently had on the draft rioters. Separately, LBE doubts that Custer's battalion of 212 men would have prevailed even with the Gatling guns and Spencer rifles, but the story illustrates that innovation is in the eye of the beholder.

Tuesday, August 14, 2007

Advocacy in peer review?

The August 10 issue of Science has a letter "The Dangers of Advocacy in Science" which includes the recommendation:

each professional society should survey members at year's end to decide on the five papers in their field with the most overly inflated claims.

See 317 Science 748.

In a different context, LBE remembers "Long Range Research" meetings in private industry, which included exorbitant claims. One wag suggested bringing speakers back the next year to establish which claims were in fact realized.

The Magnitude of the Jaffe/Lerner Patent Misunderstanding Examined

Michael King, an analyst with the Gartner Group, was hopeful that Lupin's exit may signal a strategic shift from Qualcomm as legal gunslinger. “Qualcomm has always been considered very, very aggressive, and Lou was definitely known for being aggressive in their defense."

One recalls that Jaffe and Lerner in Innovation and Its Discontents around page 35 praised Qualcomm's use of the patent system. Although they misunderstood the CAFC decision in the Rambus case, they criticized Rambus for trying to patent an industry-standard. Ironically, the undoing of Qualcomm in the present matter was in trying to secure patent coverage over the H.264 standard. What Jaffe and Lerner think is "good" about the patent system is not necessarily what others think is good, as the Qualcomm / Broadcom matter is showing in spades. Recall also the Harvard Business Review article that told people to "plagiarize with pride." It's becoming increasingly apparent what "patent reform 2007" is about. It's also clear that many of the criticisms of the patent system made by the reformers aren't true.

US 5,452,104 to Chong U. Lee (based on application 08/102,124 which was a continuation of application Ser. No. 08/004,213, filed Jan. 13, 1993, abandoned, which is a continuation of application Ser. No. 07/710,216, filed Jun. 4, 1991, now abandoned, which is a continuation-in-part application of U.S. patent application Ser. No. 487,012 filed Feb. 27, 1990, now U.S. Pat. No. 5,021,891 issued Jun. 4, 1991, and as such relates to image processing.)

US 5,576,767 to Chong U. Lee and David Pian (based on application 08/532,042, which was a continuation of application Ser. No. 08/407,427, filed Mar. 17, 1995, abandoned which is a continuation of application Ser. No. 08/012,814 filed Feb. 3,1993, now abandoned. )

One notes that Chong U. Lee is a co-inventor of US 5,719,937 (issued February 17, 1998 based on application 08/712,900), which patent is assigned to Solana Technology Development Corporation (San Diego, CA). See also US 6,154,484.

Monday, August 13, 2007

Honolulu-based Oceanit Laboratories Inc. is looking to patent a nanotechnology concrete mix that creates stronger material for use in buildings, bridges and roads.

The article notes:

Oceanit has applied for a $500,000 federal research and development grant to develop the technology in coordination with state and county transportation officials. Initially, the nanoconcrete would be tested for durability and strength. Ultimately Oceanit hopes the technology will revolutionize the way the structural integrity of concrete is monitored, though that application could take years to develop.

"The carbon nanotube mixture we're patenting acts like a spider web within the concrete," said Oceanit spokesman Ian Kitajima. "Stresses in the concrete material are sensed by this internal web. Small pulses of electricity are sent through this nano-web within the concrete. Changes in the web reflect changes in a bridge's structure, which affects the return signal that could be used to determine the health of a building."

Peter N. Glaskowsky, the chief system architect at Montalvo Systems, has a piece in CNET describing Greg Aharonian as a well-known patent expert AND suggesting the patentability of instructions for making a specific movie: a script. Glaskowsky made a comment below, and suggested a better link for his work.

IPBiz notes Aharonian is not a patent attorney, and one notes that there already has been a patent application AND an article in JPTOS on the patentability of a script.

Andrew Knight will send one a copy of the JPTOS article: For an information packet, including a copy of the JPTOS article, contact Andrew Knight or visit www.PlotPatents.com.

Guess looking for prior art isn't part of the Glaskowsky approach. The Aharonian involvement in the Jaffe/Lerner prior art meltdown (at page 144 of Innovation and Its Discontents, Princeton University Press (2004)) has previously been noted:

At page 144 of Innovation and Its Discontents, we have the text:

Consider Patent No. 6,049,811, which is for a “Machine for Drafting a Patent Application and Process for Doing So.” Describes a computer that poses a series of questions to a potential patentee, asking him to describe his invention. The application for this patent cited as relevant prior art just one other patent and two published articles.

Greg Aharonian pointed out, a line of research at Hitachi anticipated this event by many years (165)

In 1992 JPTOS published an article by two of the managers of Hitachi ’s Intellectual Property Division, describing in detail their development of a new system to automate the patent application process (166). Apparently the examiner also missed this publication in his search of prior art. [74 JPTOS 315-334 (1992)]

One notes that the idea of the missed reference apparently comes from Greg Aharonian, not from Jaffe and Lerner. One does not see that Jaffe and Lerner investigated 74 JPTOS 315 to prove that this reference does anticipate the claims of US 6,049,811. In fact, the subject matter of 74 JPTOS 315 has nothing to with the claims of US US 6,049,811. One gets a hint that 74 JPTOS 315 is about something entirely different than the '811 patent at page 320: which states "The distributed patent offices convert the application documents and specifications (prepared on word processors) to electronic application format." The "advance" disclosed in the JPTOS article is that "the inventor prepares the patent specification manuscript on a word processor." Of course, the inventor has already written down everything (in no particular sequence) on paper, as Figure 5, on page 321 shows. There is NO TEACHING in the JPTOS article of what is in claim 1 of the '811 patent.

One notes that Jaffe and Lerner seem to be uninformed about the meaning of prior art. To paraphrase Emerson, the more they talked about the failures to find prior art, the more I wanted to check the prior art they said was unfound.

**Tried to submit the following to zdnet:

This topic has been covered in the patent journal literature AND a patent application has been filed (and published) in the US.

**Glaskowsky's comment to the effect he was referencing Aharonian brings up an interesting "journalistic responsibility" issue: does Glaskowsky have a responsibility to look into the accuracy (and here "currentness") of what Aharonian said? Ditto, Jaffe and Lerner. In the greater scheme of patent law, Glaskowsky's reference was not a big deal. Jaffe and Lerner's is more problematic, because it was wrong. Worse still was the "transistor only for hearing aid" assertion, which worked its way into prestigious law reviews (UChicago, Stanford) but which was based on an interview (with someone who had NO firsthand knowledge, had nothing to do with the transistor, and who was dead wrong on the point.) Similarly, should someone be able to cite the Stanford Law Review for the "fact" that Gary Boone invented the integrated circuit? One hopes not, but then look at the traction on Quillen and Webster.

Again, look to Glaskowsky's bigger post.

***UPDATE

An email has been sent to Greg Aharonian to get his current views on the '811 patent.Separately, note the discussion in Landis.

Second, during the high Tc oxide superconductors, Chu at Houston said "let me replace some of the La of La2CuO4 (Tc circa 40 K) with Ba. It is known that putting pressure raises Tc." So he added Ba, but did not get the La2CuO4 layered structure. He got a much more complex layered structure (inadvertently), which was the 123 compound with Tc circa 90 K.

I proposed adding Tl to the 123 structure. I failed. Someone 3-6 months later made such, by heating the mix some 50 C hotter than I had done. Gee, how close I had come?? But do you hear me crying in my milk, and trying to invalidate his work, because I "thought" of it first?

So, what was "obvious"??? Standard obvious thinking did not lead to standard obvious chem structure, but to an entirely new beast, with a better Tc.

Third, circa 1960-62, many people were saying "one should be able to make compounds of Xe". We all know who did....so was it "obvious"? I think Neil Bartlett's story that he realized PtF6 could oxidize Xe, while preparing a Gen Chem lecture, shows non-obviousness....but anybody could have done a Born Haber cycle calculation. (And I suppose those who thought compounds of Xe were makable, had done such BH cycle calculations.)

Relevant to an earlier post(Scientific Publishing), Ron Katznelson points out the paper by M. Bregonje in World Patent Information suggesting that patents' share as a first information source increased 8-10% per decade between 1980 and 2000.

One might want to know the absolute share, and one might want to know how to count "first information source."

Separately, it is easy to comply with the patent rules AND to obtain rapid journal publication. The story of publishing the transistor discovery, recounted in Foreseeing A Not Obvious Future, Intellectual Property Today (September 2004) is instructive:

Because of the national security implications of the transistor, Bell Labs felt obliged to notify the military. While waiting for that release (On June 23, Ralph Bown gave a presentation to a group of military officers and the release ef-fectively came in June 1948 when the military failed to classify the transistor), Bardeen and Brattain sent a letter about their invention to the Physical Review, but asked for the publication to be delayed. n9 As to the name "transistor," Bell Labs actually had a vote on naming the device of Bardeen/Brattain/Shockley, and a copy of the "ballot" of May 28, 1948 is available on the internet (http://users.arczip.com/rmcgarra2/namememo.gif). An application for Shockley's device was field on June 26, 1948, and matured into US 2,569,347. The invention of the transistor was disclosed in a public presentation in New York City on June 30, 1948, and Ralph Bown, director of research at Bell, demonstrated the transistor in a telephone handset, with a radio, and with a television. The New York Times had a small mention of this in "News of the Radio" on page 46 on July 1, 1948 (a copy is available on the internet at http://people.msoe.edu/ reyer/regency/NYTimes.jpg); the New York Herald Tribune was more prescient than the Times, saying that "engineers believe it will cause a revolution in the electronics industry!"

Endnote 9 of the IPT article: The submission date of the letter to Physical Review (1948, 74, 230) is June 25, 1948, which is after the cip filing of Bardeen/Brattain (June 17) but before the filing of Shockley's patent (June 26). Shockley is acknowledged in the Physical Review letter. Compare this behavior of Bardeen/Brattain (patent application first, then submission of paper) to that of some Berkeley inventors as reported by Lawrence Busch in footnote 28.

IPBiz notes that the Bardeen/Brattain journal publication, submitted AFTER the CIP filing, appeared in print LONG BEFORE the patent did. IPBiz notes that the Bardeen/Brattain device was significantly different than the Shockley device. Separately, distinct patent applications of Bell Labs on transistors submitted in this time period were rejected over Lilienfeld's 1930 US patent, which effectively disclosed a field effect transistor. In an interesting irony of history, in April 2000 in the journal Science (Science, 2000, 288, 656), Jan-Hendrik Schon of Bell Labs reported a realization of a field-effect device that allows switching between insulating and superconducting states. Schon's work was subsequently found to fraudulent, but Schon's first citation was to J. E. Lilienfeld, U.S. Patent 1,745,175 .

Separately, in 2004, in footnote 29 of 71 U. Chi. L. Rev. 129, it was suggested that the inventors of the transistor anticipated a use for hearing aids and therein did not foresee the full scope of their invention. There were several problems with footnote 29, which to this day in 2007 have never been corrected.

First, the citation within footnote 29 in the article in the University of Chicago Law Review to the article by Carol Haber in Electronic News has confused the issue number of Electronic News (2018) with the page number (46). Thus, the citation itself is mechanically wrong.

Second, there is no support whatsoever in the Haber article for what the inventors of the transistor did, or did not, think of the uses for the transistor. The Haber article mentions discussion of the transistor in an article by the New York Times: "The invention of the transistor was not front page news but a tiny item in a weekly column "News of Radio" buried inside a 1947 edition of the New York Times. The device, the article predicted, 'might be used to develop better hearing aids for the deaf.'" Thus, there is no support in the cited reference for a lack of understanding of the scope of the invention by the inventors, the reason for which the reference was cited. The footnote should have failed cite-checking for both of these reasons. [Parenthetically, there is also a potential issue with the mention of the year 1947 in the Haber article as opposed to the year 1948; the transistor was not named until 1948 and there was a news blackout by Bell Labs until June 30, 1948.]

As can be seen from the IPBiz text above, the likely date for the Times article is July 1, 1948.

The above is further evidence for the proposition that one simply cannot believe what is in law review articles, even those of prestigious law schools.

About Me

I'm a patent lawyer located in central New Jersey. I have a J.D. from the University of Chicago and a Ph.D. from Stanford University, where I studied graphite intercalation compounds at the Center for Materials Research. I worked at Exxon Corporate Research in areas ranging from engine deposits through coal and petroleum to fullerenes. An article that I wrote in The Trademark Reporter, 1994, 84, 379-407 on color trademarks was cited by Supreme Court in Qualitex v. Jacobson, 514 US 159 (1995) and the methodology was adopted
in the Capri case in N.D. Ill. An article that I wrote on DNA profiling was cited by the Colorado Supreme Court (Shreck case) and a Florida appellate court (Brim case). I was interviewed by NHK-TV about the Jan-Hendrik Schon affair. I am developing ipABC, an entity that combines rigorous IP analytics with study of business models, to optimize utilization of intellectual property. I can be reached at C8AsF5 at yahoo.com.